Dupont Nutrition Biosciences Aps (formerly Danisco A/s v Novozymes A/s Danisco (uk) Ltd (Defendant to Counterclaim)
| Jurisdiction | England & Wales |
| Judge | The Hon Mr Justice Floyd,Mr Justice Floyd |
| Judgment Date | 07 February 2013 |
| Neutral Citation | [2013] EWHC 155 (Pat) |
| Docket Number | Case No: HC 10 C 02358 |
| Court | Chancery Division (Patents Court) |
| Date | 07 February 2013 |
[2013] EWHC 155 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Rolls Building, London EC4A1NL
The Hon Mr Justice Floyd
Case No: HC 10 C 02358
and
Andrew Waugh QC (instructed by Arnold & Porter (UK) LLP) for the Claimant and Defendant to Counterclaim
Richard Miller QC and Miles Copeland (instructed by Bird & Bird LLP) for the Defendant
Hearing dates: 17 18 January 2013
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Introduction
On 19 July 2010, Danisco A/S brought this claim for revocation of Novozymes A/S's European patent (UK) No 1 804 592. Before the action came to trial, the patent was revoked in proceedings before the European Patent Office. The applications before the court raise issues as to the use which may be made of documents disclosed in the course of these proceedings for the purposes of proceedings in other jurisdictions.
Danisco A/S has subsequently changed its name to DuPont Nutrition Biosciences ApS following its acquisition by DuPont, but I will continue to refer to it as Danisco, as did the parties. Long after Danisco had commenced the action, at the end of 2011, Novozymes counterclaimed for infringement against Danisco A/S's UK subsidiary Danisco (UK) Limited. It is not necessary to distinguish between the two Danisco companies. In parallel with the action, opposition proceedings were taking place concerning the same patent at the European Patent Office in Munich ("EPO"). The Opposition Division of the EPO revoked the patent, but that decision was appealed to the Technical Board of Appeal ("TBA"), which appeal had suspensive effect. There were also proceedings of various kinds in other European countries. Before the trial could take place, the TBA revoked the patent. The subject matter having disappeared, the claim and counterclaim come to an end. The applications which are before the court raise a number of issues concerned with the terms of the final order to be made to give effect to the termination of the action and counterclaim. The principal issue is that concerned with the use to which documents disclosed in the action here may be used in proceedings elsewhere. In particular I have to decide:
i) The scope of the permission which has been granted or is to be granted to use documents disclosed on discovery outside the scope of the present proceedings;
ii) Whether that permission should extend to a particular document disclosed by Novozymes but which is the subject of a claim to privilege;
iii) Whether an injunction should be granted to restrain Novozymes from seeking to prevent Danisco from using the documents in the foreign proceedings.
Certain other issues, including whether there should be an order for indemnity costs in favour of Danisco after a particular date, and what order should be made about interest on costs were not reached at the hearing and will have to be dealt with once this judgment has been handed down.
The relevant provision of the CPR
CPR 31.22 provides, so far as material:
"(1) A party to whom a document has been disclosed may use the document only for the purpose of the proceedings in which it is disclosed, except where –
(a) the document has been read to or by the court, or referred to, at a hearing which has been held in public;
(b) the court gives permission; or
(c) the party who disclosed the document and the person to whom the document belongs agree.
(2) The court may make an order restricting or prohibiting the use of a document which has been disclosed, even where the document has been read to or by the court, or referred to, at a hearing which has been held in public."
One effect of rule 31.22(1)(a) is that the deployment of a document in the course of a public hearing has the effect of discharging the obligation which would otherwise apply to the use of that document, namely to use the document only for the purposes of the action in which it is disclosed. It can therefore be used more widely. However, the document remains subject to the control of the court. Under rule 31.22(2) the court may still restrict the use to which the document is put, even where it has been deployed in open court.
Procedural history and background
The action has a lengthy procedural history. A helpful summary of the procedural steps up to the end of 2011, which neither side challenged, is set out at paragraphs 4 to 28 of the judgment of Arnold J given on 8 December 2011 [2011] EWHC 3288 (Pat). Important for present purposes are the following:
i) Arnold J referred to the fact that proceedings were pending between the parties in relation to the patent and related rights;
ii) On 12 March 2010 Novozymes had started proceedings on the patent against Danisco in Denmark;
iii) On 30 March 2010 the opposition to the patent was filed by Danisco at the EPO;
iv) On 17 June 2010 Novozymes started infringement proceedings on the patent against Danisco in Germany;
v) On 28 June 2010 Novozymes started revocation proceedings in the Netherlands. In those proceedings, Danisco counterclaimed for infringement.
vi) On 15 November 2010 Novozymes started proceedings against Danisco in Finland for infringement of utility models deriving from divisional applications from the patent;
vii) the EPO Opposition Division heard and determined Danisco's opposition to the patent on 7 July 2011. It held the patent invalid;
viii) On 8 July 2011 Novozymes filed appeal T1839/11 against that decision, thereby suspending its effect;
ix) On the second day of the hearing before him, Arnold J was told that the Finnish court had just revoked the utility models in issue there.
Arnold J was dealing with an application by Danisco for a stay of the action pending the decision of the TBA, and also for permission to use a limited selection of the documents disclosed in these proceedings in specified proceedings before the TBA and elsewhere. At that stage, the trial in this country was scheduled for 19 March 2012. Arnold J came to the conclusion that a stay was not justified. Although his judgment was based on a multi-factorial assessment, a prominent ground relied upon for refusal of the stay was that Novozymes had been accused by Danisco in the proceedings abroad of presenting a different picture of the primary facts than that which emerged from an examination of the documents. The early trial scheduled in this country would give Novozymes the opportunity of "clearing itself of the charge" and that issues of this nature were issues with which the English court was "well equipped to deal". Arnold J also refused permission to use the documents in the foreign proceedings. Taking into account the fact that the English judgment would be delivered before the judgment of the TBA, he held that there were no special reasons justifying the use of the documents outside the context of the proceedings in which they were disclosed. The Court of Appeal subsequently dismissed an appeal from Arnold J's judgment and order.
The application in respect of the use of documents in the foreign proceedings was in respect of a single report and a summary table. The summary table was a table prepared by Danisco setting out experimental results gleaned from a number of the disclosure documents. Permission to use the table was needed because information from the disclosure documents had been incorporated into it. Paragraph 3 of the draft order accompanying the application notice asked for permission to use these documents in the following proceedings:
i) EPO Appeal proceedings T-1839/11, which were the proceedings before the TBA in relation to the European patent in suit;
ii) Prosecution of the Divisional applications derived from the patent in suit;
iii) The national courts of Denmark, Finland, the Netherlands and Germany in proceedings relating to other national designations of the patent in suit and utility models branched off the Divisional applications;
iv) The national patent offices of Denmark, Finland and Germany in prosecution and/or cancellation proceedings relating to the utility models.
A "divisional application" is patent lawyer's jargon for an application in respect of the same subject matter as another, parent application. The procedure is described by Jacob LJ at [8] to [13] of his judgment in Napp Pharmaceutical Holdings v ratiopharm GmbH and Sandoz [2009] EWCA (Civ) 252. Paragraph (ii) above, therefore, must have been intended by Danisco to refer to divisional applications derived from the application for the patent in suit. "Utility models" are a lesser form of intellectual property right granted under the national laws in some countries. Utility models in general have a shorter term than patents, and the requirements for their grant (in particular inventive step) are usually less stringent than for patents.
In January 2012 Danisco applied in this action for specific disclosure of documents from Novozymes. The documents sought went outside the two year "window" on either side of the priority date. That window is provided for in the rules applicable to patent cases to limit the volume of standard disclosure: see CPR Part 63 PD 6.1(2). Morgan J granted the application on 15 February 2012. Morgan J's order eventually led to very substantial further disclosure by Novozymes.
A pre-trial review was held, again before Arnold J, on 2 March 2012. Although there was no formal application for an adjournment at that stage, the question of an adjournment was raised at the hearing. Novozymes submitted that the burden...
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